Trademark applications in China are continuously increasing and are expected to reach 8 million this year. Indeed, trademark protection in China is nowadays a must-have for all companies manufacturing and/or selling in the region.
However, managing a trademark portfolio in China is not done the same way as in other countries. In fact, the Chinese Trademark Office (CTMO) has several peculiar features, thus making Chinese trademarks enforcement unique.
Chinese trademark classification is not based on the Nice Classification, as it is the case for most countries, but rather on a sub-classification system. This means that each Nice class has been sub-divided in several independent classes, by CTMO examiners. Since trademark comparison is exclusively based on sub-classes, third-party trademark applications are accepted and published for the same class as long as the sub-classes are different. Thus likelihood of confusion is not taken into account for trademark applications in different sub-classes.
Therefore, when filing a Chinese Trademark application, it is highly recommended to obtain the assistance of a trademark expert familiar with Chinese trademark law, in order to ensure that your trademark covers all the goods and/or services of your interest. This will prevent third-party applications in other sub-classes of your interest and any costly opposition proceedings.
Furthermore, trademarks registrations in Chinese by international, non-Chinese entities are very rare, due to the language barrier. Chinese trademarks differ from their Anglicized versions. Indeed, the Chinese trademark corresponds to the name you have decided to adopt in Mandarin characters. For instance, the equivalent of Coca-Cola’s trademark in Chinese equals to “in order for the mouth to rejoice itself” ( 可口可乐) while the pinyin version (the phonetic version) is “kekou kele”.
Since Chinese trademark are much more likely to be remembered by locals, since they understand the language, it is also recommended to develop a Chinese version of your trademark in Mandarin characters, bearing in mind that it does not necessarily need to be the Anglicized phonetic version. Doing so will not only increase the chances that your trademark will be memorable in the Chinese market, but also ensure that you have better trademark protection in China. In fact, according to Chinese Trademark Law principles, the “original” trademark is not considered as similar to the Chinese trademark nor to the pinyin version. Therefore, only registering your “original” trademark confers limited protection when facing third-party applications for the Chinese and pinyin versions of your trademark.
Finally, concerning the enforcement of trademark rights, the Chinese IP administrative system is undergoing a reform, which will lead to the creation of a state administration in charge of regulating the markets. This new government body will unify the jurisdictions for trademark and geographical indications, thus making trademark enforcement more effective.
